The shape of the Dior Saddle bag is not a trademark according to EUIPO

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In the trademark world, very few form marks seem to take the plunge and register. Dior’s Saddle bag is an example of another that has so far failed. We take a look at what the EUIPO Board of Appeal has recently said about this.

Quick Facts

Seen under the arms of celebrities, the Dior Saddle bag could be considered iconic. In 1999, John Galliano introduced the handbag as part of Dior’s 2000 ready-to-wear collection.

In 2021, Christian Dior Couture (Dior) applied for registration of the 3D sign below as a Community Trademark (EUTM) for various goods in classes 9 and 18:

The EUIPO examiner rejected part of Dior’s application, in particular for the following products:

  • Class 9: spectacle cases, telephone cases; and
  • Class 18: bags, handbags; cases (leather goods), travel cases (leather goods), toilet and make-up cases (empty).

The EUIPO considered that the form did not deviate significantly of the norm. Therefore, it was unable to perform its essential original function and was devoid of distinctive character (Article 7(1)(b) of EUTM Regulation ((EU) 2017/1001). Dior appealed.

Dior’s arguments before the Council

Dior’s arguments before the Council included the following:-

  1. The sector is a specific sector of haute couture and luxury ready-to-wear. Consumers show high or at least above average attention.
  2. The shape is very similar to a riding saddle. This breaks with the usual codes of this sector of the fashion market.
  3. Attaching the example of bags and clutches sold by other luxury brands (found via an internet search), Dior argued that the shape deviates significantly from the norm.
  4. If the shape was not inherently distinctive, then it had acquired distinctiveness through use. (Article 7(3) EUTM Regulation.)

What did the Board of Appeal decide?

The Board of Appeal upheld Dior’s appeal for Class 9 goods, but crucially dismissed it for Class 18 bags and handbags (R 32/2022). (See here for the judgment, currently only available in French.)

His main reasons were as follows:-

1. Relevant consumer and level of attention

The Commission acknowledged that the goods were generally expensive (and could be particularly expensive), but noted that there was a wide range of prices. There were also a variety of marketing channels, including supermarkets. Therefore, she rejected Dior’s argument that the products were limited to an exclusive set.

Even though the audience had above average attention, the overall impression was key.

2. Significant deviation from industry standards

The Council said the sector was characterized by a multitude and abundance of forms to which consumers were regularly exposed.

In view of two handbags found via a simple search on the Internet, the Commission considered that the Dior shape could constitute a variant of one of the usual shapes. (Both products had a vertical structure, with a head pointing downwards.)

The Commission found that the presence or absence of a shoulder strap or handles in the Dior bag, the slightly different shape of the flap and the rectangular or rounded shape did not constitute a “significant” discrepancy. Therefore, the discrepancy did not immediately appear to consumers as an indicator of the commercial origin of the Saddle bag.

What future for Dior’s Saddle bag?

Dior’s EUTM application for its Saddle bag will now go back to the EUIPO examiner to consider its alternative claim of acquired distinctiveness. Dior hopes to be able to succeed on this basis, but shapes and other non-traditional brands have not been easy on this front either. For example, it was only last week that the EU General Court rejected Louis Vuitton’s Damier Azur design as a trademark. (See T-275/21).

Will Dior appeal the Board’s decision on inherent distinctiveness? Until we find out, it seems that Guerlain’s success in registering the shape of its lipstick is one of the few success stories for brand owners in the fashion industry in recent years. (See Tribunal press release of July 14, 2021 regarding lipstick.)

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